Ex parte KAADEN et al. - Page 4




          Appeal No. 1998-2565                                                        
          Application 08/481,455                                                      


          will not sustain the rejection of claims 1 through 12 under 35              
          U.S.C. § 103.                                                               
                    The Examiner has failed to set forth a prima facie                
          case.  It is the burden of the Examiner to establish why one                
          having ordinary skill in the art would have been led to the                 
          claimed invention by the reasonable teachings or suggestions                
          found in the prior art, or by a reasonable inference to the                 
          artisan contained in such teachings or suggestions.  In re                  
          Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).                
          "Additionally, when determining obviousness, the claimed                    
          invention should be considered as a whole; there is no legally              
          recognizable 'heart' of the invention."  Para-Ordnance Mfg. v.              
          SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,              
          1239 (Fed. Cir. 1995) (citing W. L. Gore & Assocs., Inc. v.                 
          Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.                 
          Cir. 1983), cert. denied, 469 U.S. 851 (1984)).                             
                    The Examiner reasons that Higuchi teaches the                     
          claimed invention, with tape speed increased over nominal tape              
          speed and appropriate head drum speed, but fails to                         
          particularly disclose that reproduction takes place at a tape               

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